Patent laws in India: compliance with TRIPs agreement

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• A patent is an official right to be the only person or company allowed to make or sell a new product for a certain period of time.

• A patent is an exclusive right or rights granted by a government to an inventor for a limited time period in exchange for the public disclosure of an invention.

• A patent is a right granted to an inventor by the federal government that permits the inventor to exclude others from making, selling or using the invention for a period of time. The patent system is designed to encourage inventions that are unique and useful to society. Congress was given the power to grant patents in the Constitution, and federal statutes and rules govern patents.

• A patent for an invention is granted by government to the inventor, giving the inventor the right to stop others, for a limited period, from making, using or selling the invention without their permission.

• a government authority or licence conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention.

Introduction

The TRIPs agreement, together with the 1968 Stockholm Conference that adopted the revised Berne and Paris Conventions and created the World Intellectual Property Organization (WIPO), is undoubtedly the most significant milestone in the development of intellectual property in the twentieth century. Its scope is in fact much broader than that of any previous international agreement, covering not only all areas already protected under extant agreements, but also giving new life to treaties that failed and protecting for the first-time rights that did not benefit from any multilateral protection.

In addition, the TRIPs agreement enshrined detailed rules on one of the most difficult and, for rights holders, painful aspects of intellectual property rights' enforcement. Built upon the foundations laid by the Paris Convention and the Berne Convention, the TRIPs agreement is an unprecedented international agreement in terms of its coverage, scope, specificities and enforceability. In the area of patents, the TRIPs agreement established the standards concerning the availability, scope and use of patent rights. They include:

(i)Basic standards for patentability and a limited list of exceptions to patentable subject matter;

(ii) rights conferred by a patent and exceptions to the rights;

(iii) conditions concerning the disclosure of the invention in a patent application;

(iv) compulsory licenses;

(v) availability of judicial review process for any decision to revoke or forfeit a patent;

(vi) the term of protection and

After this there are some amendment made which is for patent laws in order to fully comply with the TRIPs provisions India amended the Patents Act 1970, three times. The first two amendments to the patent legislation took place in 1999 and 2002 mainly to accommodate issues like ‘exclusive marketing rights’ (EMRs) and to extend the patent protection for the 20 years respectively. In 2005, the Patents Act 1970 has been amended for the third time. Immediately after this amendment the scientific, technical and business communities geared up for intense debate. The Patents Amendment Act, defines the term ‘new invention’ as “any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art”.

Elements of patents

Patent system of India is regulated and governed by the superintendence of General Controller of designs patents, trademark patent and geographical indications. This office of general controller runs under department of industrial policy and promotion. There are four patent offices in India among which the head patent office is located in Kolkata and other offices are located in Chennai, Delhi and Mumbai. The examiners of each patent office discharge their work according to the direction controller. Thus, there are some important elements of patents.

(i) the innovation is patentable subject matter

(ii) the innovation is called (novelty)

(iii) the innovation is inventive

(iv) the innovation is useful (called utility)

(v) the innovation must not have proper use


History

The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and microorganisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced. An invention relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under Section 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.

Cases

1. Novartis v. Union of India

Novartis filled an application of patent which is of its drugs called ‘Gleevec’ by covering it under the word invention mentioned in Section 3 of the Patents Act,1970. The SC rejected their application after a 7 years battle by giving the following reasons:There was no invention of a new drug, as a mere discovery of an existing drug would not amount to invention. SC upheld the view that under Indian Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify. This became a landmark judgment because the court looked beyond the technicalities and into the fact that the attempt of such companies to ‘evergreen’ their patents and making them inaccessible at nominal rates.

2.Bayer Corporation v. Union of India

The Delhi High Court held that ‘export’ of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 (India’s Bolar exemption) and thus does not amount to patent infringement. It accordingly allowed Natco to export Bayer’s patented drug ‘SorafenibTosylate’ (for which it was granted a compulsory license in 2012) to China for the purpose of conducting development/ clinical studies and trials. However, two months later, the order was stayed by a Division Bench which asked Natco to file a separate application seeking permission for exporting the drug for experimental purposes and observed that it would be permitted to export only a limited quantity of the drug.

3.Paramount Surgimed Ltd. v. Paramount Bed India Pvt. Ltd.

In a notable decision on the effect of misrepresentation in a suit, which seeks equitable reliefs, the Delhi High Court held that suppression or misrepresentation of facts in the plaint was fatal to a claim for equitable relief. The bigger takeaway from the decision is that even when the Plaintiff has registered a mark, dishonesty on its part would result in its right to claim equitable relief, including relief in the form of interim injunction, being rendered nugatory.

4. Kent RO Systems Ltd. &Anr. v. Amit Kotak &Ors.

In a welcome development, the Delhi Court ruled that there is no obligation on the intermediaries to screen content alleged to be violative of intellectual property laws before publishing the same (i.e. on an ex-ante basis). It, therefore, refused to direct E-bay to remove listings of water purifiers that allegedly infringed Kent RO’s registered design from its website or to issue a prohibitory injunction preventing E-bay from publishing the same in the future

5. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd.

In a notable development for Indian trademark law, the Supreme Court reiterated that IP rights are “territorial” and not “global”. The court refused to grant an injunction restraining the defendant from using its registered trademark ‘Prius’ even though Toyota was a prior user of the mark. It reasoned that even though Toyota’s mark was well-known outside India, Toyota failed to prove that it enjoyed a reputation in the ‘Indian’ market at the relevant point of time i.e. the year 2001 when the defendant began using the mark in India.

References:

http://www.mondaq.com/india/x/125766/Patent/Patents+Law+In+India+Everything+You+Must+Know

https://spicyip.com/indias-top-10-ip-judgments-orders-of-2017-jurisprudence-legal-lucidity

https://www.business.qld.gov.au/running-business/protecting-business/ip-kit/browse-ip-topics/new-products,-processes-and-inventions-patents/five- requirements

https://www.collinsdictionary.com/dictionary/english/patent

www.legalserviceindia.com/articles/ptwy.html

https://www.techopedia.com/definition/24243/patent

www.ipindia.nic.in/history-of-indian-patent-system.html

https://altlawforum.org/publications/a-history-of-patent-law